Considerations in Selecting a Trademark

Updated: November 17, 2025

1. What are the procedures for choosing a trademark?

 The essential procedures for choosing a trademark consist of:  

• creating a list of potential marks;   
• performing a search of the relevant local trademark registers and marketplaces to make sure your preferred marks are not identical or confusingly similar to existing trademarks within the same industry in the relevant jurisdictions; and  
• assessing how each mark will be viewed by the target consumers in each jurisdiction of interest.  

2. What does the process of creating a list of potential trademarks entail? 

In the process of creating a list of potential trademarks, it is essential to consider the characteristics of the mark, particularly its relative strength or distinctiveness as a trademark, and any local prohibitions on registration.  

Strength 

The strength of a mark pertains to how easily it is recognized by consumers as a trademark. A mark that is strong or distinctive is generally simpler to register and safeguard against unauthorized use compared to a mark that is more descriptive—and therefore, weaker. Trademarks can be classified along the following spectrum of strength or distinctiveness: 

• Fanciful or Coined Marks: The most robust type of mark is a coined or invented word, commonly referred to as a fanciful mark. Fanciful marks possess no meaning beyond their function as a trademark (e.g., VERIZON or PEPSI), which may initially pose a challenge for consumers to recall. Nevertheless, these marks offer trademark owners the greatest opportunity to forge a strong and favorable brand connection between a mark and its related goods or services. Once goodwill is established, fanciful marks give trademark owners the widest range of protection against unauthorized use of the same or a similar mark.
• Arbitrary Marks: Arbitrary marks refer to terms that have a general meaning yet are used for products or services that do not relate to that meaning (e.g., APPLE for computers, or SHELL for gasoline). Once goodwill associated with the mark is established, arbitrary marks can obtain extensive protection against the use of the same or a similar mark by third parties.
• Suggestive Marks: Suggestive marks, which are not as robust as fanciful or arbitrary marks, imply certain qualities or characteristics of the related goods or services without directly describing them. These marks necessitate some level of imagination or contemplation from the consumer to ascertain the precise nature of the goods or services. Notable examples of suggestive marks include AIRBUS for aircraft, KITCHENAID for kitchen appliances, and SWEETARTS for confectionery.
• Descriptive Marks: Descriptive marks, which are positioned towards the weaker end of the distinctiveness spectrum, are those that explicitly identify one or more characteristics of the goods or services they represent, such as AMERICAN AIRLINES for airline services in the United States. Terms that are laudatory, like “best” or “quality,” also belong to this category of marks. Generally, a descriptive mark cannot be registered unless it has gained distinctiveness through a considerable duration of exclusive use. A mark achieves distinctiveness when, over time, consumers come to recognize it as associated with a singular source.  

Beyond issues of registrability, descriptive marks pose challenges in terms of protection against third-party use, as competing entities often need to use similar terminology to describe their offerings. For instance, COLD AND CREAMY as a trademark for ice cream merely conveys characteristics of the product and is likely ineligible for protection upon initial use, since other ice cream manufacturers may find it necessary to use these phrases in marketing and selling their ice cream products. However, if, over time, only one entity were to use COLD AND CREAMY to advertise its ice cream, it is conceivable that consumers might begin to regard that term as a trademark, thus making it eligible for both registration and protection against third-party use.  

•  Generic Terms: A generic term is a word or phrase that is a common term associated with a particular category of goods or services. It cannot function as a trademark and is thus not registrable or protectable. Also, trademarks that are initially distinctive but are not properly used or protected and become identified as the product category (rather than the source of the product) are genericized and lose their right to protection from third-party use. “Escalator” and “cellophane” are classic examples of terms that once functioned as trademarks but, through lack of action to protect the mark, became generic and are now used as the common names for the products, regardless of their source. 

Prohibitions on Registration  

Examples of prohibitions on registration include surnames, geographic terms, and appellations of origin. 

• Surnames. When choosing a trademark, it is important to consider that local trademark regulations in various jurisdictions often prohibit the registration of terms that are primarily merely a surname, unless distinctiveness has been acquired. This is because such surnames may be held by others who wish to conduct business under their own name. Typically, these terms cannot be registered or protected without demonstrating acquired distinctiveness, similar to descriptive marks.
• Geographic Terms. In numerous jurisdictions, terms that denote geographic locations can pose challenges for registration or protection. Terms that consist of the geographic area from which the products or services originate (be it a street, city, or country) are treated similarly to descriptive marks and are generally not registrable without proof of acquired distinctiveness. For instance, the term MILAN for clothing produced in Milan, a city renowned for its fashion industry, would likely not be registrable upon initial use, as other clothing manufacturers from Milan require the ability to identify Milan as the source of their products.
• Geographical Indications/Appellations of Origin. In certain jurisdictions, legal designations that specify particular regions recognized for specific goods or services have been granted special protections that restrict the use of those designations for such goods or services unless they are produced in those regions. This is especially applicable to wine, other alcoholic beverages, and food products known to originate from specific areas. These protections, commonly referred to as geographical indications or appellations of origin, are separate from trademark rights. For example, in some jurisdictions, the term “Champagne” may be applied only to sparkling wine produced in Champagne, France. 

For additional details on creating a candidate list of distinctive marks, please refer to the INTA Practitioners’ Checklist titled “Trademark Creation” (https://www.inta.org/wp-content/uploads/member-only/resources/practitioners-checklists/Checklist_Trademark-Creation-FINAL.pdf?verify=1771947869-PuxOXJ6JGw5C1pSb-PjmVsGwfA9eywPUbLdQqikSqFk; member login required). 

3. What are the best practices for searching and clearing potential trademarks?

Once you have compiled a list of potential trademarks, the best practice is to conduct clearance searches to ascertain whether other entities have already registered and/or used the same or a confusingly similar mark. Confusing similarity may be identified when one mark resembles another in appearance, sound, meaning, and/or overall commercial impression. For example, a U.S. court found the marks POLAROID and POLARAD to be confusingly similar.  

These searches should be undertaken early in the process of selecting a new mark, as it is preferable to be aware of any potential claims to rights in the mark before making a significant investment. You should concentrate your searches in each jurisdiction where you genuinely intend to sell or manufacture your goods or services. Although you may have the ability to search databases that numerous jurisdictions provide online for public access, it is highly recommended that you consult with a local trademark expert to verify whether your mark is indeed available in each of your jurisdictions of interest. For further information, please refer to the INTA Practitioners’ Checklist “Trademark Clearance Search” (https://www.inta.org/wp-content/uploads/member-only/resources/practitioners-checklists/Checklist_Clearance-Search-FINAL.pdf?verify=1771947826-RNPngZhP7BLRT4U0hUk7bbMs7teO0yKnxojNqIFJSeY; member login required). 

Likewise, it is crucial to confirm that the Internet domain name associated with your trademark is available in your preferred locations, as an online presence may be significant in the promotion of your product or service.  

4. What is the best way to understand how a mark may be interpreted in other jurisdictions? 

You may seek the advice of a local trademark expert to understand how the mark might be interpreted in the real world (for instance, whether a mark carries an unfavorable connotation; could lead to confusion regarding the nature of the product or service; or might be challenging to read, spell, or pronounce in that region). For instance, the Chevrolet NOVA vehicle did not perform well in numerous Spanish-speaking nations because “no va” in Spanish translates to “does not go.” Local expertise can be extremely valuable and will assist you in avoiding such expensive errors.  

5. What should I do once I have selected my trademark?

Once you are confident in your trademark selection, you should promptly (i) file an application in the jurisdictions where you plan to use the mark; and (ii) introduce your product or service to market. Commencing use of your mark is especially important in jurisdictions such as the United States and Canada, which follow a “first to use” policy (i.e., priority rights in the trademark are based on first use). Other jurisdictions, such as France and Benelux, follow a “first to file” policy, meaning that priority rights in a mark are assigned to the party that first files an application for registration of the mark. In “first to file” jurisdictions, timely filing of your application is especially key. 

See also Trademark Searching Fact Sheet

Additional Resources

• Country Guides: Essential Information on Trademark Protection Worldwide
  Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions. Membership required.

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